Thursday, October 22, 2015

TTAB Test: Are "1-888-SU-ABOGADO" and "YOURLAWYER" Confusable for Legal Services?

Richard J. Eisner sought to register the mark 1-888-SU-ABOGADO for "legal services," but Examining Attorney Deborah Meiners refused registration under Section 2(d), finding the mark likely to cause confusion with the registered marks YOURLAWYER and YOURLAWYER.COM for legal services. Eisner provided a translation of "SU ABOGADO" as "YOUR LAWYER," but he argued that the marks differ in appearance and sound, and further that the consumers of legal services are sophisticated. How do you think this came out? In re Richard J. Eisner, Serial No. 85593854 (October 2, 2015) [not precedential].

Because the involved services are identical, a lesser degree of similarity is necessary to support a finding of likelihood of confusion. Even though the legal services of applicant and registrant may not be provided at different locations, they compete for the same customers through all normal channels for those services.

In order to determine similarity with English word marks, a foreign language mark is translated into English in accordance with the doctrine of foreign equivalents. That doctrine is applied when an ordinary American purchaser would stop and translate the word into English. [Some terms, like cordon bleu, or Tia Maria, would not be translated, but rather would be taken at face value].

Because the literal and direct translation of "su abogado" from Spanish to English is "your lawyer," the involved marks have highly similar meanings. The prefix "1-888" and the suffix ".com" have no source-identifying significance.

However, the Board must also compare the appearance and sound of applicant's untranslated mark with the two cited marks. Although there are several points of distinction in appearance and sound between the marks, the Board found that the near-identity in meaning outweighed those differences, such that the marks create the same overall commercial impressions.

The Board concluded that the first du Pont, the similarity of the marks, favored a finding of likely confusion.

Applicant Eisner pointed to a dozen registered marks containing the terms "your" and "lawyer," but all of them contained additional verbiage and thus were distinguishable from the marks involved here. Moreover, there was no evidence regarding use of the marks, and thus the probative value of this evidence was minimal. Likewise, evidence of third-party usage of toll-free numbers and domain names containing the terms "law" or "lawyer" was of little value absent evidence of the extent of use.

The Board agreed with applicant that the cited marks are highly suggestive. [Applicant sought a Supplemental Registration and one of the two cited registrations was on the Supplemental Register]. But YOURLAWYER.COM is registered on the Principal Register and is entitled to a presumption of validity under Section 7 of the Trademark Act. In any case even weak marks are entitled to protection against the registration of confusingly similar marks for identical services.

Finally, turning to applicant's "sophisticated customer" argument, the Board observed that its determination under Section 2(d) must be founded on consideration of the "least sophisticated purchaser" of the involved services. And even if ordinary consumers exercise care when shopping for legal services, careful consumers are not immune from source confusion when confronted with highly similar marks used in connection with identical services.

Balancing the relevant du Pont factors, the Board found confusion likely, and it affirmed the refusal.

TTABlog comment: The "stop and translate" approach to the doctrine of equivalents needs some explanation. I believe the idea behind the doctrine of foreign equivalents, as applied here, is that some Americans speak both English and Spanish (more than 30 million, actually), and they will recognize that SU ABOGADO means the same thing as YOUR LAWYER. Those bilingual people may be thinking that the services come from the same source, with the mark being used in both English and Spanish. When the involved foreign language is obscure, then the proportion of Americans who are likely to be confused is too small to worry about. [See, for example, the SUNRISE guitar pick case, involving the Hawaiian term "pukana la," and TTABloggedhere].

The "relevant consumers" do not include those Americans who speak only Spanish, because those persons would not (and could not) translate the term into English. How many American consumers speak Spanish but not English?

2 Comments:

A registration on the Principal Register for YOURLAWYER.COM in connection with legal services. The Board agreed that the cited marks are highly suggestive? In my book those marks are completely descriptive - if not generic.